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In the Third Circuit plaintiff was compelled to elect whether he should continue his suit under section 1 of the Sherman Act for a contract, combination of conspiracy in restraint of trade, or under $ 2 for monopolizing or attempting to monopolize or combining or conspiring to monopolize trade or commerce.?

8 454m. Pleading in actions at common law upon patents. By the Revised Statutes: “Damages for the infringement of any patent may be recovered by action on the case, in the name of the party interested, either as patentee, assignee, or grantee. And whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment thereon for any sum above the amount found by the verdict as the actual damages sustained, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs.

It has been held in the Sixth Circuit that the pleadings of both the plaintiff and the defendant in such an action must conform to the rules of pleadings in actions on the case at common law,” but there seems to be no reason why the State practice, except in so far as this has been changed by an act of Congress, should not be followed.3

The plaintiff should allege either that he has fixed the word "patented,” together with the day and year the patent was granted on the patented article, or when, from the character of the article, this cannot be done by fixing to it, or to the package in which one or more of them is enclosed, a label containing a like notice; or else that the defendant was duly notified that he was infringing the patent and continued the infringement after such notice. When the articles were thus marked, no further notice is required.5


7 Buckeye Powder Co. v. E. I. Du 339; Walker Patents, $ 442. Pont de Nemours P. Co., C. C. A., Contra, Cottier v. Stimson, 20 Fed. 223 Fed. 881.

906, 907. § 454m. 1U. S. R. S. $ 4919; 8 U. S. R. S. $ 914; supra, & 454. Comp. Stat. & 9464. As to dam- 4 U. S. R. S. & 4900: Comp. Stat. ages see supra, 8 389e.

$ 9416; Sprague v. Bramhall-Deane 2 Myers v. Cunningham, 44 Fed. Co., 133 Fed. 738; supra, & 146. 346, per Ricks, J.; Moy v. Mer- 8 Munger v. Perlman Rim Corp., cer County, 30 Fed. 246; Marvin v. C. C. A., 244 Fed. 799. C. Aultman & Co., 46 Fed. 338,

The plaintiff must show: that he or the person through whom he claims was the inventor or discoverer of the thing or process patented; 6 that it had not been previously patented nor described in any printed publication, in this or in any foreign country; 8 nor patented in any foreign country in the twelve months or in the case of a design patent in the four months, prior to the application; ' that it was not in public use or on sale for more than two years before the application 10 He must allege: that the patent was duly issued under the seal of the Patent Office and signed by the Commissioner of Patents 11 That the plaintiff had at the time of the infringement, a title to the patent, or such an interest therein, as made him legally aggrieved.11a Where he was not the original patentee, he must show how he acquired his title.12 He must allege infringement by the defendant.13 A simple averment that defendant has infringed the patent above described was held to be sufficient.14

The Revised Statutes provide: “In any action for infringement the defendant may plead the general issue, and, having given notice in writing to the plaintiff or his attorney thirty days before, may prove on trial any one or more of the following special matters :

First. That for the purpose of deceiving the public the description and specification filed by the patentee in the Patent Office was made to contain less than the whole truth relative to his invention or discovery, or more than is necessary to produce the desired effect; or,

Second. That he had surreptitiously or unjustly obtained the patent for that which was in fact invented by another, who

6 Am. Graphophone Co. v. Nat. Phonograph Co., 127 Fed. 349; supra, $ 146.

7 Ibid.

8 Mass v. McConway Farley Co., 144 Fed. 128; supra, $ 146.

9 U. S. R. S. $ 4887, as amended 29 St. at L. 693, 32 St. at L. 1225, supra, $ 146.

10 Am. Graphophone Co., supra, $ 146.

11 § 4883; 25 St. at L. 40; 32 St.

at L. 95; Comp. St. & 9427, supra, $ 146.

11a Krick v. Jansen, 52 Fed. 823, supra, & 146.

12 Vant Woud Rubber Co. Sternau, 145 Fed. 197, supra, $ 146.

13 Western El. Instrument Co. v. Valee Bros. El. Co., 145 Fed. 534; supra, $ 146.

14 Am. Bell Tel. Co. v. So. Tel. Co., 34 Fed. 803; supra, $ 146.

was using reasonable diligence in adapting and perfecting the same; or,

Third. That it had been patented or described in some printed publication prior to his supposed invention or discovery thereof, or more than two years prior to his application for a patent therefor; or,

Fourth. That he was not the original and first inventor or discoverer of any material and substantial part of the thing patented; or,

Fifth. That it had been in public use or on sale in this country for more than two years before his application for a patent, or had been abandoned to the public. And in notices as to proof of previous invention, knowledge or use of the thing patented, the defendant shall state the names of patentees and the dates of their patents, and when granted, and the names and residences of the persons alleged to have invented, or to have had the prior knowledge of the thing patented, and where and by whom it had been used; and if any one or more of the special matters alleged shall be found for the defendant, judgment shall be rendered for him with costs. And the like defenses may be pleaded in any suit in equity for relief against an alleged infringement; and proofs of the same may be given upon like notice in the answer of the defendant, and with the like effect.” 16

The burden of proof rests upon the plaintiff to establish novelty and invention. 16 Disputed questions as to invention and infringement are, in general, questions of fact which should be submitted to the jury under proper instructions.17 Where the facts are undisputed, as to the meaning of the claims, or as to the prior art, novelty and invention are questions of law to be decided by the court.18

Profits cannot be recovered in an action at law, 18 but where the complaint alleged that the damages to the plaintiff and the

15 U. S. R. S., § 4920. 16 Supra, $ 188.

17 Prepayment Car Sales Co. v. Orange County Traction Co., C. C. A., No. 122, 221 Fed. 939; Trustees of Masonic Hall and Asylum Fund V. Fountain Electrical Floor Box

Corporation, C. C. A., 218 Fed. 642.

18 Prepayment Car Sales Co. v. Orange County Traction Co., C. C. A., 221 Fed. 939, 941.

19 Brown v. Lanyon, C. C. A., 148, 838, 78 C. C. A. 728.

profits to the defendant were the same specified amount, the court took jurisdiction accordingly.20 Where the proof is conflicting in an action at law for infringement, it is a question for the jury to decide whether the patented invention is of a primary character and the patent a pioneer. 21

$ 454n. Pleading in actions at common law upon copyrights. The Revised Statutes provide that “in all actions arising under the laws respecting copyrights, the defendant may plead the general issue, and give the special matter in evidence." 1

The Pennsylvania practice in replevin is not followed by the courts of the United States, there held, in actions to enforce a forfeiture under the Revised Statutes for breach of copyright. In New York, a cause of action to recover penalties for infringement of copyright cannot be joined with one for damages for tort not connected with copyright, namely, the circulation of the piratical publication under the plaintiff's name.3

In other respects, the pleadings in actions at common law arising under the copyright Laws should in general follow the State practice. 4

The plaintiff's initial plea must set forth every fact necessary under the statute to the existence of a valid copyright.5 Where there are alternative methods of compliance with the statu


20 Portland Gold Min. Co. v. Hermann, C. C. A., 160 Fed. 91.

21 Transit Development Co. Cheatham El. Switching Device Co., C. C. A., 194 Fed. 963.

8 454n. 1 U. S. R. S., $ 4969.

2 U. S. R. S., $ 4965; Falk v. Curtis, 102 Fed. 967; s. C., C. C. A., 107 Fed. 126; Gustin v. Record Pub. Co., 127 Fed. 603. See $ 150, supra.

3 Ohman v. City of New York, 168 Fed. 953.

4 Ohman v. New York, 168 Fed. 953; Johnston v. Klopsch, 88 Fed. 692. See Hale on Copyright and Literary Property, 13 Corpus Juris 1198-1203, supra, $ 150.

6 Burk v. Relief, etc., Assoc., 3 Hawaii Fed. 388; Parkinson v. Laselle, 18 F. Cas. No. 10,762, 3 Sawy.

330; Boucicault v. Hart, 3 F. Cas. No. 1,692, 13 Blatchf. 47; Chicago Music Company V. J. W. Butler Paper Co., 19 Fed. 758; Stover v. Lathrop, 33 Fed. 348; Falk v. Howell, 34 Fed. 739; Trow City Directory Co. v. Curtin, 36 Fed. 829; Scribner v. Henry G. Allen Co., 43 Fed. 680; Scribner v. Henry G. Allen Co., 49 Fed. 854; Osgood v. A. S. Aloe Instrument Co., 69 Fed. 291; Burnell v. Chown, 69 Fed. 993; Ford v. Charles E. Blaney Amusement Co., 148 Fed. 642; Ohman v. New York, 168 Fed. 953; Bosselman v. Richardson, 174 Fed. 622, 98 C. C. A. 127; Gaument Co. v. Hatch, 208 Fed. 378; See Hale no Copyright and Literary Property.

tory conditions, they cannot be pleaded in the disjunctive, 6 although if not inconsistent they may be pleaded in the conjunctive.?

The plaintiff must allege: the citizenship or residence of the person who first acquired the copyright.8 When such person is a non-resident alien, he must allege the existence of reciprocal copyright relations between his country and the United States entitling him to the benefit of the copyright laws.9 He must in general terms allege authorship and originality to the extent necessary to support a copyright, 10 the insertion or use of the statutory notice of copyright,11 except in the case of foreign editions,12 compliance with the requirement of domestic manufacture when applicable to the work in which a copyright is claimed,18 the facts which show that plaintiff is competent to maintain the suit and the right of action asserted is vested in him.14 When the plaintiff claims as assignee it may not be necessary to set forth his chain of title.15 It has been said that an averment that plaintiff was author 16 or proprietor 17 would be sufficient. It is the safer practice where the copyright was not obtained in plaintiff's name, or he was not the author, to show

6 Falk v. Howell, 34 Fed. 739.

7 Scribner v. Henry G. Allen Co., 43 Fed. 680.

8 Webb v. Powers, 29 F. Cas. No. 17,323, 2 Woodb. & M. 497.

9 Ohman v. New York, 168 Fed. 953.

10 Atwill v. Ferrett, 2 F. Cas. No. 640, 2 Blatchf. 39; Henderson v. Tompkins, 60 Fed. 758; Bosselman v. Richardson, 174 Fed. 622, 98 C. C. A. 127; Crown Feature Film Co. v. Levy, 202 Fed. 805.

11 Trow City Directory Co. v. Curtin, 36 Fed. 829; Falk v. Gast Lith., etc., Co., 40 Fed. 168; Haggard v. Waverly Pub. Co., 144 Fed. 490 ; Ford v. Charles E. Blaney Amusement Co., 148 Fed. 642.

12 Haggard v. Waverly Pub. Co., 144 Fed. 490; United Dictionary Co. v. G. & C. Merriam Co., 208 U. S.

260, 28 S. Ct. 290, 52 L. ed. 478.

13 Hale on Copyright and Literary Property, 13 Corpus Juris 1201, criticising Osgood v. A. S. Aloe Instrument Co., 69 Fed. 291.

14 Ferrett v. Atwill, 8 F. Cas. No. 4,747, 1 Blatchf. 151; Crown Feature Film Co. v. Levy, 202 Fed. 905.

16 Lillard v. Sun Printing & Pub. Ass'n, 87 Fed. 213. See Tams v. Witmark, 30 Misc. (N. Y.) 293; 63 N. Y. Supp. 721; aff'd 48 App. Div. (N. Y.) 632.

16 Falk v. Schumacher, 48 Fed. 222; Falk v. Seidenberg, 48 Fed. 224; Gaumont Co. v. Hatch, 208 Fed. 378.

17 Ibid. Lillard v. Sun Printing, etc., Assoc., 87 Fed. 213; Edward Thompson Co. v. American Law Book Co., 119 Fed. 217.

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